Saturday, 25 July 2015

An Analysis of TKDL at the EPO

Following my recent post on the IPKat here about (at least partly) false claims made by the Indian government regarding the relevance of the Traditional Knowledge Digital Library (TKDL), I thought I would have a good look at a bigger sample of the recent claims that have been made. These are listed on the TKDL website here as 'major milestones'. Another list is available here on the TKDL website indicating all instances where the TKDL has been used in third party observations, but without any claims to the relevance of the observations.

The major milestones page claims that things have happened, such as applications being refused or withdrawn, "based on the TKDL evidences". Based on the cases I have seen so far, these claims have turned out not to be true. The recent announcement by the Indian government to have "foiled an attempt by consumer goods giant Colgate-Palmolive to patent a mouthwash formula containing herb extract by citing ancient texts that show it was traditionally used in ancient medicinal practices" was just one recent example, as I showed in my recent post.

I wondered whether there had been any cases where the TKDL had been actually relevant in determining the outcome of an application. The only way to find out was to look at each of the cases and see what actually happened. The table below, which is derived from the TKDL's own list, shows for each European application in the list a summary of what happened, and whether the claim is true or false (or perhaps somewhere inbetween). You don't need to take my word for it though, as links are provided in each case for verification if needed.

Where I have indicated that the TKDL claim is false, this is based on there being no objections raised by the examiner in relation to the TKDL documents or, in some cases, that the examiner has specifically stated that the references were not as relevant as those already cited, and therefore could not possibly have made any difference. Where I have indicated that the claim is true, this is where either the examiner has specifically raised objections and/or the applicant has responded to the references by amendment. Whether any subsequent deemed withdrawal has anything to do with the TKDL citations is, of course, unknown, but I have given the TKDL the benefit of any doubt where any objections have been raised during prosecution.

Based on TKDL evidences, Phenolics, LLC, P.O. Box 2439,
846 San Carlos Avenue, El Granada, CA 94108-2439 / United States has amended
the claims of application no. EP1572219 for
"Efficient method for producing compositions enriched in total
phenols" and then the application was deemed to be withdrawn.

Based on the TKDL evidences, Application no. EP2328598 (Phenolics,
LLC United States) for "Novel compositions containing isolated
tetrameric type a proanthocyanadin and methods of use and manufacture",
is deemed to be withdrawn.

Inventive step objection based on document D1 cited by
examiner in last examination
report dated 7 March 2014. TKDL observations also mentioned. Application
subsequently deemed withdrawn due to no renewal fee payment.

Decision to refuse dated 20 March 2015 based on objections
in examination
report dated 17 March 2015, cites document D8 (WO 2004/069143) as main
reference for novelty & inventive step, D10-12 & D18 used in inventive
step. None of cited documents from TKDL.

FALSE

Based on the TKDL evidences, Application no. EP2689806 (Colgate-Palmolive
Company/ United States of America) for "Oral compositions containing
extracts of myristica fragrans and related methods", is deemed to be
withdrawn.

Last examination
report dated 6 October 2014 cites document not from TKDL as main
reference.

FALSE

Avon Products / U.S. has amended the claims of the
application no. EP1827362 for
"Compositions and methods of their use for improving the condition and
appearance of skin" based on the TKDL evidences.

Based on the TKDL evidences, Nestec S.A. / Switzerland
have withdrawn their Application No. EP2243383 for
"A method and composition for nutritionally improving glucose control
and insulin action."

Summons
to oral proceedings dated 1 Aug 2014 specifically mentions third party
observations not being more relevant than documents already on file.

FALSE

Based on the TKDL evidences, Application no. EP2266586 (Lifeline Nutraceuticals Corporation 6400
South Fiddler's Green Circle, Suite 1970 Englewood, CO 80111 / United States)
for "Compositions and method for alleviating inflammation and oxidative
stress in a mammal", is deemed to be withdrawn.

Based on the TKDL evidences, Application no. EP1558271 (Metaproteomics,
LLC / United States) for "Compositions that treat or inhibit
pathological conditions associated with inflammatory response", is
deemed to be withdrawn.

Application was closed on 09-Jan-15.

Examiner considered claims to be new and inventive over cited documents and TKDL documents in examination report dated 3 March 2014. Minor clarity objections raised. No response filed, application deemed withdrawn.

FALSE

Based on the TKDL evidences, Application no. EP2419508 (Somalabs,
Inc., 40 Allen Road, South Burlington, VT 05403 / United States) for
"Method for the induction of a reward response by modulation of
dopaminergic systems in the central nervous system", is deemed to be
withdrawn.

Application was closed on 12-Nov-14.

TKDL observations used in examination report dated 7 March 2014 for inventive step argument. Application then deemed withdrawn due to missing renewal fee.

TRUE

Unitika, Ltd./ Japan has amended the claims of the
application no. EP2226071 for
"Composition for oral administration" based on the TKDL evidences.

Novelty objection in examination report dated 20 Feb 2015 based on document cited by international examiner. TKDL evidence not mentioned.

FALSE

Based on the TKDL evidences, Unigen, Inc. / US, have
amended the claims of application no. EP1881839 for
"Compositions of Bakuchiol and methods of making the same" and then
the application was withdrawn.

New Chapter, Inc. / US has amended the claims of the
application no. EP2435057 for
"Compositions and methods for modulating lipid composition" based
on the TKDL evidences. Application was refused on 17-Jun-2015.

Amendments made in response to documents cited by examiner. Examination report dated 7 March 2014 indicates that "third-party observations has been taken into account", but novelty & inventive step objections based only on examiner cited documents. Reasons for refusal in summons to oral proceedings dated 10 March 2015 made no mention of TKDL references.

FALSE

Mimozax Co., Ltd. , 4291-1, Miyauchi Hatsukaichi-shi,
Hiroshima 738-0034 / Japan has amended the description of the application
no. EP2052731 for "Composition for preventing
and/or treating itching containing component originating in the bark of tree
belonging to the genusacacia." based on the TKDL references.

No third party observations have been filed.

FALSE

Nanyang Polytechnic/ Singapore has amended the claims of
the application no. EP2416793 for
"A plant extract comprising statins and preparation techniques and uses
thereof" based on the TKDL evidences.

Based on the TKDL evidences, Application no. EP2293689 (Mars,
Incorporated / US) for "Food product", is deemed to be withdrawn.

Application was closed on 04-Aug-14.

Examination report dated 22 November 2013 considered third party observations to be relevant for inventive step. No response filed, application deemed withdrawn.

TRUE

Based on the TKDL evidences, Application no. EP2269598 (Metaproteomics,
LLC/ United States) for "Curcuminoid compositions exhibiting synergistic
inhibition of the expression and/or activity of cyclooxygenase-2", is
deemed to be withdrawn.

Application was closed on 18-Jul-14.

Search opinion dated 23 May 2011 cited TKDL references mentioned in third party observations, raising novelty objections based on these. Subsequent deemed withdrawal due to non-payment of renewal fee.

Search opinion dated 10 July 2012 indicated that TKDL references were not considered to be as relevant as examiner cited documents.

FALSE

Out of a total of 23 cases where a claim has been made that something happened "based on the TKDL evidences", 15 turn out to be completely false. There are no cases where an application has been refused based on TKDL evidence, but several where an application has lapsed for one reason or another after TKDL evidence has been submitted. It looks to me like the TKDL is a potentially useful source of prior art in limited circumstances, but is nowhere near as significant as it is made out to be. Perhaps the Indian government could be a little more honest and make claims where they are actually justified.

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About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.